Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Sunday, 30 November 2003

The Trademark Blog reports on the advertising agency Saatchi & Saatchi’s site devoted to lovemarks. According to the agency, brands are old hat. People automatically assume that they will get goods and services that perform to their expectations. Instead, the future belongs to lovemarks, entities that not only earn the respect of consumers, but also create “an intimate, emotional connection that you just can’t live without. Ever” and are “a relationship, not a mere transaction”. Such loyalty is earned through a mixture of love and respect (unlike brands which command respect only and fads, where only love is a factor). The respect arises from a combination of mystery (not knowing about something makes you want to find out more about it), sensuality (the design, flavour and other sensual elements of the product) and intimacy with the brand (so that it touches on the consumer’s personal aspirations and inspirations). The site offers you a chance to test if your favourite products are in fact lovemarks, asking questions such as “Have [product] been inspirational in your life?” and “Does [product] fit in perfectly to the way you dream about yourself?” Also available is a list of lovemarks that other people have nominated, from Absolut Vodka to Yorkshire Pudding via Marmite and McDonald’s.

The IPKat is not impressed by lovemarks. At present we live in a commercial environment in which the public is increasingly suspicious of superbrands and increasingly tired of their advertising. To reverse this, Saatchis are obviously trying to persuade their customers to get consumers to become more sentimental and soft-headed again, in the hope that this will start a new advertising trend, with Saatchis as the trendsetters. The idea of cultivating mystery in the face of consumer demands for more information about outsourcing and cheap labour seems particularly cynical. The IPKat’s conclusion is that Saatchis wouldn’t have come up with lovemarks if there wasn’t a smell of hatemarks in the air.

The Register reports that, faced with an ongoing patent battle in the US that threatens to place injunctions on its products, RIM is focusing heavily on Europe and has launched a tri-band full colour BlackBerry PDA (personal digital assistant) this week -- only to find itself attacked by another intellectual property lawsuit, this time from a Luxembourg-based company. RIM and T-Mobile USA have been sued in Delaware by InPro II Licensing, a Luxembourg-based licensing company, which claims that the companies are infringing its patents. Inpro is seeking damages which are "in no event less than a reasonable royalty". RIM, which is appealing against an injunction granted to US intellectual property company NTP that could potentially ban it from selling its products, has filed a suit in federal court in Dallas asking for a ruling that the InPro patents are invalid. RIM said in a statement this week that InPro had shown "threatening and grasping behaviour". All the legal uncertainties surrounding RIM add to the problems facing all PDA makers in a declining market. One of the company's weaknesses has always been its lack of success in Europe, which it is aiming to reverse next year.

The IPKat has observed over the years that IP litigation in general, and patent litigation in particular, becomes more intensive in weakening markets. That's because, when a market is expanding rather than contracting, money that might be spent in litigation frequently attracts a better return when spent on marketing or new product development. But when the market diminishes, enforcing IP rights may be the only way to save a business from losing profitability or indeed going under.

Friday, 28 November 2003

The IPKat is packing his bags to fly off to Switzerland for next week's INTA Worldwide Forum on Trademark Protection (1 and 2 December, Noga Hilton Hotel, Geneva). The forum is devoting an entire day to "Madrid System for the International Registration of Marks". If you'd like to meet the IPKat in Geneva and say hello, just send him an email.

Thursday, 27 November 2003

In Oriental Kitchen Sarl v Office for Harmonisation in the Internal Market, Case T-286/02, the Court of First Instance of the European Communities reaffirmed the principle established in Matratzen v OHIM[2003] ETMR 392, that descriptive terms were registrable as trade marks if the description was in a language not known in the jurisdiction in question. Oriental Kitchen (OK) applied to OHIM to register the word mark KIAP MOU for goods in Classes 29 and 30 (including meat and prepared dishes). An opposition was filed by Mou Dybfros, owners of the MOU registered trade mark in the UK for goods in Classes 29 and 30. The Opposition Division rejected the application, there being a risk of confusion since the marks and the goods were similar. OK appealed unsuccessfully to Board of Appeal and then appealed further to the Court of First Instance (CFI). OK argued that OHIM had misapplied Art.8(1)(b) Council Regulation 40/94, that it only intended its products to appeal to expatriate Chinese and Indonesians living in Western Europe and that "mou", being the Thai word for pork, was merely descriptive and could not therefore be protected.

The CFI rejected OK's application. The Court did not have to take into account the fact that Oriental kitchen had intended its products to appeal exclusively to a Chinese or Indonesian clientele living in western Europe. There was nothing in the trade mark application to suggest that Oriental Kitchen had intended this to be the case. Further, the products went through the same sales channels and outlets as those sold to the average consumer. Finally, the fact that the term "mou" had a meaning in Thai did not affect the definition of the relevant public. Also, there was nothing to prevent the products at issue from being sold under the mark at issue to the same wider public, as was targeted by the earlier mark. Therefore, in view of those considerations, the relevant public for the mark at issue was the average consumer of foodstuffs in the UK. The goods on which OK and Mou Dybfros used the marks were identical. So far as visual and aural similarity, "mou" was both a unique term constituting the entirety of the earlier mark and the second word of "kiap mou". In terms of conceptual similarity, the words "mou" "kiap" and "kiap mou" had no meaning for consumers in the relevant market (the UK), for whom "mou" could not therefore be descriptive. Since the same applied for "kiap", both those terms were equally engaging to the relevant public and would be perceived by the public as equally dominant components without affecting the distinctive character of "mou". OHIM's Board of Appeal was therefore correct in finding that the respective signs were similar. UK consumers would be likely to think that the food sold under the mark KIAP MOU could come from the same enterprise as that owning the trade mark MOU. OK's appeal was therefore dismissed.

The IPKat thinks this analysis must be right. If the MOU and KIAP MOU registrations were allowed to stand together in respect of the same products, the commercial utility of one or both of them would inevitably be severely compromised.

In Shield Mark v Kist, the ECJ has decided the conditions under which sound trade marks can be registered. Shield Mark obtained Benelux registrations in various forms for the melody of the first nine notes of Beethoven's Fur Elise and the sound of a cockerel's crow. When it brought trade mark infringement and unfair competition claims against Mr Kist, the court found that there was no infringement. Since the Benelux Governments intended to refuse to register sounds as trade marks , they had been invalidly registered. Shield Mark appealed to the Hoge Raad. In response to the Hoge Raad's reference, the ECJ provided the following guidance on the registrability of sounds as trade marks:

♦ On the issue of whether sound marks can be trade marks - Sound marks are capable of being trade marks under Article 2 of Directive 89/104 if they are capable of distinguishing the goods or serviced from one undertaking from those of other undertakings and if they are being capable of being represented graphically. They are not by their nature incapable of distinguishing between the goods of different undertakings and because they are precluded from registration under Article 2 Member States cannot preclude them from registration as a matter of principle.

♦ On the issue of whether sound marks can be represented graphically - following its Sieckmann, the ECJ reiterated that a trade mark can consist of a sign that is not capable of being perceived visually (such as a sound or an olfactory mark), as long as it can be represented graphically, particularly by means of images, lines or characters and if its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Furthermore, in order to obtain registration of a sound, an applicant must state in his application that he is applying for a sound mark.

♦ Whether certain ways of representing sounds are acceptable for trade mark purposes - While it was for national courts to determine whether the marks submitted in each case met these criteria, the ECJ was prepared to offer guidance on whether representation by musical notes or written language was sufficient. A description using written language could not be said to be insufficient a priori. However, Shield Mark's claim for the first nine notes of Fur Elise and a cockcrow was not sufficiently precise or clear, making it impossible to determine the scope of protection sought. This therefore did not meet the graphical representation element of Article 2. An onomatopoeia is also insufficient because there is a disparity between the onomatopoeia and the noise it purports to represent. Furthermore, an onomatopoeia can be perceived differently in different Member States - something more is needed to make onomatopoeia registrable. Music notes in the form A, C, E etc are also unacceptable since they are not clear, precise or self-contained as it is impossible to determine from such a representation alone the pitch and duration of the sounds forming the melody claimed. However, a stave divided into bars showing a clef, musical notes and rests forms a faithful representation of the sequence of sounds forming the claimed melody and as such meets the graphic representation requirements. Although a stave is not immediately intelligible, it may be easily intelligible, allowing the competent authorise and the public (including other traders) to know precisely the sign whose registration is sought. The ECJ refused to provide guidance on whether a sonogram, a sound recording, a digital recording or a combination of those methods were sufficient since these were hypothetical questions that the referring Netherlands court did not need to reach its judgment because Shield Mark had not applied for registrations in those forms.

The IPKat isn't surprised by the ECJ's conclusion after the court's judgment in Sieckmann. He observes though that the door has clearly been left open to the registration non-visual signs, the representations of which will require some interpretation before they can be understood. However, of all the non-visual signs, sounds are unique in having a method of notation that allows people to know exactly what the sign will be like merely by looking at the visual representation of them. He also notes that it seems that only sounds in the form of a musical melody will succeed and so he's withdrawing his application for the cat's miaow for intellectual property information services.

A WIPO press release says its Member States have made some progress towards revision of the Trademark Law Treaty (TLT) following a meeting in Geneva last week of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). This meeting was attended by 79 member states, three intergovernmental organisations and 10 non-governmental organisations, Discussions focused on the revision of the TLT, which was concluded in 1994 with a view to streamlining and simplifying formal trade mark procedures relating to national and regional trade mark applications and the maintenance of trade marks. The TLT currently has 31 member countries. Applicants seeking trade mark protection must meet certain formality requirements in order to avoid rejection of their application. These formalities currently vary from one country to another. The proposed TLT revision includes provisions on electronic filing of trade mark applications and associated communications and the introduction of relief measures when certain time limits have been missed, A Diplomatic Conference to consider the revision of the TLT may be held as early as 2005 (a decision on this is expected at the next meeting of the SCT in April 2004).

The SCT approved the proposal on communications which envisages that "any Contracting Party may choose the means of transmittal of communications". This means that national trade mark offices may choose whether to accept filings on paper only, by electronic means only, or both on paper and by electronic means. It also agreed to simplify requirements regarding the language of communications. Although the treaty mentions the principle according to which no Contracting Party may require the attestation, notarisation, authentication, legalisation or any other certification of any signature in a communication, offices which receive communications in more than one language may require a translation by an official translator or a representative. Proposals on signatures adressed recent developments such as the increasing acceptance by Offices of electronic signatures or other types of identification. Contracting Parties will still be free to require the original paper copy of any electronic communication within a reasonable period of time. The SCT also largely approved a provision on measures in case of failure to comply with time limits. The provision requires Contracting Parties to provide at least for one of three types of relief: (i) extension of the time limit, (ii) continued processing or (iii) reinstatement of rights.

Although the IPKat likes to play with a ball of string occasionally, he disapproves of all forms of red tape and regrets the fact that so many national offices have for so long been reluctant to adopt more streamlined and user-friendly systems for dealing with trade mark applications.

In 1994, Dr Mina Alikani of Cornell University Medical Centre published a paper in the journal Human Reproduction detailing her research on how a weakness in the wall of the inner cell mass of an embryo may lead to a greater likelihood of the embryo developing into a set of identical twins. Unsurprisingly, she was not best pleased when, in 2000, she noticed that seven paragraphs of her paper had been reproduced in another publication, Human Reproduction Update. The article had four named authors, Mr N Abusheika, Dr O Salha, Mrs V Sharma and Mr P Brinsden, though the piece was actually written by the first two doctor and the latter two, as senior authors, merely had a supervisory role. An apology appeared in the journal condemning such plagiarism but also acknowledging that due to the vast number of academic publications available, it was unreasonable to expect senior authors to comprehensively check for such wrongdoing. Subsequently, the General Medical Council brought an action for serious professional misconduct against the authors, stating that such conduct was unethical and unprofessional, though the action against the senior authors was dropped and only that against Abusheika and Salha was continued. The trouble was, it was impossible to tell which of the two doctors was responsible for the addition of those paragraphs and so, instead of the charge being conscious copying, it was couched in terms of failing to adequately review the paper. The GMC, against the advice of its legal adviser, found both guilty of serious professional conduct, highlighting the lack of honesty and integrity of the two and holding that:

“All authors are responsible for the contents and substance of any paper to the extent that they have not taken reasonable steps to discharge their responsibilities. To accept the benefits of authorship while evading the responsibilities for any deficiencies in the paper is unacceptable and dishonest."

The case was appealed to the Privy Council, which found that the GMC had been wrong in its approach. It had concluded that one or the other of them had acted dishonestly and, because the doctors did not give evidence (since they admitted serious professional misconduct) so the GMC had no evidence of which of them was responsible for the copying, it found them both guilty of dishonesty. This violated “fundamental principle of fairness that a charge of dishonesty should be unambiguously formulated and adequately particularised”, even if there was a high degree of negligence on the part of the non-copying author. Nonetheless, even the non-copying doctor was guilty of profession misconduct for letting the publication go ahead, despite the fact that the plagiarism was only of Dr Alkani’s expression of the state of the art in the field, rather than of her actual research. However, the GMC’s sentence of 3 months suspension from the register for the pair was reduced to a reprimand because the 3 month sentence was intended to highlight the seriousness of dishonesty but the Privy Council had found that dishonesty could not be proved.

The IPKat notes that professional codes of conduct, such as that of the GMC can supplement copyright and other IP protection and tailor the conditions for liability to the needs of the profession in question. Another prominent example is the Press Complaints Commission’s Code of Practice. In this case, while there is no need for dishonesty or even negligence to be shown for copyright claims to succeed, the GMC is able to afford special censure to copying that it considers to have been done in circumstances that are detrimental to the profession.

Wednesday, 26 November 2003

The Lawtel subscription-only service has featured the curious case of Attorney-General v Ryan Lee Parry and MGN Ltd. In this case the parties made a statement in open court, announcing the agreement of terms of settlement between the Queen and MGN, the publishers of the Daily Mirror newspaper. This settlement follows the publication of two articles in the Daily Mirror that showed there was an inadequate vetting process for potential employees of the Royal Family at Buckingham Palace and also disclosed personal details of the domestic life of the Queen and members of the Royal Family. Parry, a reporter for the Daily Mirror, obtained a position as a footman in the Royal Household by submitting a false reference. Parry started work with the Royal Household on 23 September 2003 and the first of an intended series of articles appeared in the newspaper on 19 and 20 November 2003. Those articles not only revealed shortcomings in the vetting process for engaging staff at Buckingham Palace and Windsor Castle but also revealed intimate details of the personal and domestic lives of the Royal Family. The Royal Family considered them to be "a highly objectionable invasion of privacy, devoid of any legitimate [public] interest" and in breach of privacy agreement signed by Parry. A temporary injunction was ordered by Mr Justice Lewison on 20 November 2003. This injunction prevented any further publications while the parties submitted evidence to the Court, on the ground that the Queen was likely to succeed in obtaining a permanent injunction against further publication.

The terms of settlement agreed by the parties before Mr Justice Lightman on 24 November included (i) a permanent injunction prohibiting any further disclosures by Parry or MGN; (ii) delivery up of all photographs and unpublished documents; (iii) the destruction of any draft and unpublished stories; (iv) a ban on any further syndication of material already published and (v) an undertaking not to republish certain photographs. The defendants also agreed to contribute £25,000 to the Queen's legal costs.

The IPKat is delighted that the parties were able to do all this themselves, in contrast with the dispute involving the other royal family (Douglas and Zeta-Jones v Hello!) in which the parties could scarcely be induced to agree on anything. The IPKat also notes that the Royal Family appear to treated, at least in this instance, as being as protectable by the law as any of their subjects are, contrary to the view that there is an inherently greater public interest in knowing about them than about ordinary citizens
.
More on domestic servants here, here and here Vetting of employees here and here Other types of vetting here and here

The IPKat brings news of an interesting Trade Mark Registry decision concerning an opposition based on a registration of a colour per se. Orange Personal Communications is the proprietor of two marks for the colour orange in the form of Pantone 151 and a colour sample, applied to the visible surface of packaging or promotional materials etc, where it is the predominant colour. It opposed Easygroup’s application to register various terms prefaced with the word “easy”, such as easyPoints, easyJet.com and easyGiro, all with the colour orange claimed as an element of the mark. However, during the course of the opposition the opponent sought to amend the application in order to include a claim under s.5(1) of the Trade Marks Act (identical marks, identical goods/services). The Hearing Officer held (mirroring the Civil Procedure Rules on amendment) that such an amendment could only be made if it had some prospect of success and here the opponent had no possibility of success.

The ECJ in LTJ Diffusion v Sadas said that identity of sign and mark must be interpreted strictly and that, for a sign to be earlier to any identical mark, it must reproduce the earlier mark without any modification or addition. Here the addition of the “EASY” prefixed words constituted an addition or modification to the opponent’s earlier mark, since the earlier mark did not include any words at all. The fact that the opponent could choose to use its mark together with words did not mean that such words could be taken to form part of their monopoly. Instead, what was relevant was the fixed point of reference in the earlier mark with which the comparison with later marks could be made. For the marks to be identical, the word “EASY” had to be contained within the earlier mark; the inclusion of the word “predominant” in the reference to the use of colour by the opponent in his registration did not result in wording being included in the opponent’s monopoly.

The IPKat notes that this is the first case that he is aware of where the registration of a single colour as a mark has been compared to a later mark or use. He expects many other tricky problems to filter through in this area if traders are able to secure single colour registrations, particularly how one judges whether a specific shade of a colour that is used by an applicant/defendant is similar or identical to the strictly delimited (as all colour marks must be after Libertel) colour of an earlier trade mark.

Tuesday, 25 November 2003

“Privacy and Celebrity” was the title of the lecture given tonight at the Institute of Advanced Legal Studies by Michael Tugendhat QC (now Mr Justice Tugendhat). The lecture, hosted by the Society for Advanced Legal Studies, was attended by the IPKat who, despite his celebrity in IP circles, arrived incognito so as to preserve his privacy intact.

Michael Tugendhat started with an historical review of the attempts made by celebrities such as Lady Eden, King George III and Queen Victoria to protect their privacy through the control of paintings and etchings which featured them, drawing a parallel with the attempts of celebrities such as Catherine Zeta-Jones to do the same thing through controlling which images of them can be used. He then outlined the positions taken against further legislative intervention in support of personal privacy rights, both by Lord Hoffmann in Wainwright v Home Office, and by the Department of Culture, Media and Sport. Both the government and Lord Hoffmann, as well as the speaker himself, felt that a free-standing privacy action was not necessary because other, pre-existing legal rights are sufficient to protect peoples' privacy. After a review of British case law culminating in Wainwright v Home Office (IPKat, 26 October 2003), the speaker discussed the possibility of utilising the provisions of the Data Protection Act 1998. He also discussed the far-reaching repercussions of the European Court of Justice ruling in Lindqvist (IPKat, 16 November 2003) and the even more far-reaching effect of the European Convention on Human Rights and its attendant case law. His conclusion was that, while time will show whether there is a need for further specific legislation, the privacy interests of not only celebrities but of ordinary citizens are surprisingly well protected. The speaker concluded by drawing attention to the upcoming privacy case brought by Princess Caroline of Hanover in the European Court of Human Rights in Strasbourg.

The IPKat was happy to know that, after all the excitement and uncertainty generated by the implementation of the Human Rights Act 1998, Michael Tugendhat felt confident that the judiciary would place reliance not only on the “new” sources of privacy law but also on pre-1998 case law in seeking to balance the interests of individuals seeking privacy with the interests of the press in the freedom to disseminate publicly significant information.

From first to last: Samuel D. Warren and Louis D. Brandeis, “The Right to Privacy” (1890) here; Lord Phillips, “Private Life and Public Interest” (2003) here Celebrities in need of privacy here, here and here

Last Friday, the IPKat attended the Queen Mary Intellectual Property Research Institute and Fordham School of Law Dialogue on Geographical Indications. Too much was said during the round table to bring you a blow-by-blow account, so instead the IPKat will detail some of the most interesting points that were raised:

♦ There was a major tension between the US and EU attitudes to GIs. The Americans saw them as anti-competitive and as an example of EU protectionism. It was suggested that GIs granted monopolies in generic terms to certain traders and therefore resulted in horizontal market division between those traders who are fortunate enough to be entitled to use GIs. The Europeans present tended to take a less hard-line approach, recognising that, by providing consumers with information about the products in question, GIs can have pro-competitive effects. One proposed solution from the American delegation was that every GI holder should also have to coin a generic description of his/her product so that competitors will be able to adequately describe their products if they are similar to those covered by the GI. The IPKat was not particularly persuaded by the American position. GIs aren’t as much of a threat to competition as was asserted. GIs do not stop competitors from producing similar or even identical products as long as they do not market them under the GI. Certainly they’ll have to find another way of describing the nature of their products but this should be possible although it may require some effort. Additionally, few GIs are truly generic. Most are used in conjunction with a separate generic term e.g. the “ham” element of “Parma ham”.

♦ It was suggested that geographical indications are part of the anti-globalisation trend because of their focus on unique regional specialities. The IPKat isn’t too sure about this: proponents seek protection for the same GIs all over the world. As a result, there are certain GIs that are recognised as luxury products the world over.

♦ It was asked why spirits were included in the Doha Declaration whereas TRIPs had just covered wine.

♦ The economics of GIs were discussed. Although it was recognised that overly-restrictive GI protection can limit the availability of product information and thus have a negative economic effect, the fact that it can incentivise GI holders to invest in their goods was also noted, as was the ability of GIs to protect the livelihood and cultural heritage of local producers. Other associated costs, such as the expense of running a register of GIs, were also highlighted.

From the IPKat’s point of view, the main issue is this: There are other, lengthier ways for competitors to describe the characteristics of their goods. Whether we think it is reasonable to expect competitors to use those methods, rather than the more convenient GIs depends on: (i) the cost we are prepared to impose on competitors who enter the market – searching for suitable descriptive terms rather than using the GI as a shortcut imposes a burden on competitors and (ii) the cost we’re prepared to impose on consumers in the search for products with certain characteristics – it will be easier for consumers if they can search for goods similar to those that bear a GI if the similar goods can use the GI in some way e.g. “Tastes just like Parma Ham” or “Gorgonzola-style cheese, made in England”

Monday, 24 November 2003

Ananova reports that British Prime Minister Tony Blair is to make an appearance on “The Simpsons”. He has provided his voice for the episode, entitled "The Regina Monologues", in which the cartoon family visit England. In this episode the family comes to London for a holiday and is met at Heathrow airport by Mr Blair, who invites them back to his residence at 10 Downing Street for tea. After gaining tips on where to visit in London from the Prime Minister, Homer causes chaos by tipping tea from his Union Jack tea cup over the carpet. Homer also ends up in trouble with the Royal family after he crashes a Mini Cooper into the back of the Queen's horse-drawn carriage and is locked up in the Tower. The episode, which also features the voices of Harry Potter author JK Rowling and Sir Ian McKellen, is being aired on Fox tonight in the US and is due to be shown in Britain in January.

The IPKat wonders what precautions Tony Blair may have taken to protect his intellectual property. He has not registered his name as a trade mark. In the UK there is no property right in a distinctive voice; nor could he sue if the producers of the Simpsons had substituted a sound-alike actor for him. The IPKat assumes that, as is usually the case with Mr Blair, his lines were scripted by the Americans.

The Sunday Telegraph reports that Disney has pulled out of the new live-action Peter Pan film just five weeks before its release date. The decision is the result of a row between the studio and Great Ormond Street Hospital in London, which inherited the copyright in Peter Pan under the will of JM Barrie. Disney has argued that it should not have to pay any royalties to the hospital on the film-related merchandise that it sells since it has been making regular payments to secure the animated rights to the story and has made voluntary payments from its income from merchandise associated with its animated “Peter Pan” film. Disney however feels that its partners in making the film, Sony and Revolution Studios, should have to pay over a proportion of their merchandising profits.

The IPKat is somewhat perturbed. While Great Ormond Street is undoubtedly the copyright holder in Peter Pan, the IPKat does not see why this should automatically entitle it to merchandising rights in all things Peter Pan, unless we’re going to recognise copyright in names. Disney plans to merchandise books, board games, soft toys and computer games, but only books really involve making use of Great Ormond Street’s copyright material. The IPKat says that this is a trade mark or passing off issue, rather than a copyright issue.

Sunday, 23 November 2003

England’s victory in the Rugby World Cup final was a mixed blessing for the team’s shirt sponsors, telecoms company 02. The team’s victory was a boost for the company, but the most high-profile England supporter at the event, that telegenic teenager, heavily-photographed and much-filmed Prince Harry, wasn’t wearing the right team shirt. The shirt, which Prince Harry refused to change, was an old model bearing 02’s former name, BT Cellnet. The sponsors saw Prince Harry wearing the "wrong" shirt at England's other matches and tried everything to persuade him to ditch it for the latest version, complete with the O2 logo. They sent him several new jerseys and even enlisted the help of the Rugby Football Union, their £8 million commercial partner. The Prince, however, was having none of it: his old shirt was a present from England star and match-winner Jonny Wilkinson and was, as His Highness put it, a lucky shirt since England always won when he wore it.

A senior manager with 02 is reported as saying: "It's very disappointing for us because the Prince has attracted worldwide media attention on television and on the front pages of newspapers, but the commercial value for us has been zero. We sent the Prince a few new shirts but he wanted to wear what he considered to be his lucky shirt. England did win the World Cup, so maybe it was a lucky shirt after all”. A spokesman for the Rugby Football Union added: "We tried to get him to change, but wearing Jonny Wilkinson's old shirt is his way of supporting the team. If he wants to wear Cellnet we can't stop him. Royalty are not going to be commercial". 02’s disappointment was compounded by the fact that its opportunities to capitalise on its sponsorship in Australia had already been severely curtailed. The World Cup organisers banned teams from wearing sponsors' logos on their shirts and insisted on "clean" stadiums to avoid "commercial clutter". Under the tournament rules, no sponsor other than an official commercial partner was allowed to advertise within 500 yards of any of the grounds, while team logos were banned from training pitches and even the clothes worn by players as they travel to a match.

The IPKat, not known as a keen royalist, has some sympathy with the prince. Since English teams do not normally win anything through their own efforts, it must be assumed that the wearing of the wrong shirt was the reason why the team won. On a legal note, there is no basis upon which 02 could compel anyone to abandon the use of shirts bearing its former company name and logo, notwithstanding the fact that such use may cause confusion or undermine the value of the later name and logo.

GlaxoSmithKline (GSK), the world's second largest drugs group, has lost its action to prevent Swiss company Novartis making and selling cheap generic versions of Augmentin, GSK's leading antibiotic. GSKâ€™s proceedings were aimed both against Novartis and its generic company, Geneva Pharmaceuticals. The US Court of Appeals for the Federal Circuit ruled in favour of Novartis and Geneva late on Friday, upholding Geneva's claim that seven of GSK's patents for the drug were "improper and should not have been used to extend patent protection for [GSK's] product".

Novartis and Geneva surprised the market in 2002 when it launched a generic version of Augmentin. The launch came after an unexpected US legal decision in May 2002 that a number of GSK's patents for Augmentin were invalid. GSK spent over a year fighting the decision but the original ruling has now been upheld, ending the legal dispute between the companies. In 2001 Augmentin had US sales of almost $1bn. In the first quarter of 2003, sales were $83m, down 64 per cent against the same period last year. A spokesman for GSK said the company remains committed to its newer Augmentin antibiotic medicines - Augmentin ES and XR - which now account for nearly 35 per cent of the total number of prescriptions for branded and generic Augmentin.

The IPKat commiserates with GSKâ€™s shareholders on the likely diminution of the value of their share holdings in the light of this decision, but he reminds them that we live in a world of swings and roundabous - this decision should at least help to reduce their medical bills.

An article from the BBC details the University of Plymouth’s BA in Business and Perfumery. The students on this course learn how to create a smell to a brief that will later be passed on to the perfumer for refinement. As well as creating a “trade mark” smell for products such as perfumes, shampoo and detergents that may have a functional role, the odour is meant to communicate an emotion to the consumer. This is made complicated by the fact that different fragrances have different connotations in different countries, so smells may have to be formulated on a regional basis.

The IPKat notes that while smells are an important aspect of many products, following the ECJ’s decision is Sieckmannoutlining the problems with registering odours as trade marks, it is hard to see how they can have value as intellectual property assets.

Friday, 21 November 2003

Population control in China is likely to remain a problem if the patent application filed in 1994 by Hao Hongfeng is anything to go by. According to the abstract, his invention is for an “external-use type anticonceptive drug” made of “traditional Chinese medicinal pregnancy-proof incense”. The invention, which can be made in the form of powder and emulsion, is either inhaled or spread on the Jenchung acupoint (the midline of the nasal philtrum, one third of the way from the nose to the edge of the upper lip) or the belly-button, it can “attain the goal of birth control”. The good news is that this medicine has no toxic side-effect. The bad news is that it has a success rate of only 92%.

The IPKat, noting the steps that WIPO is currently taking to protect folklore and traditional knowledge, wonders if steps will also have to be taken to protect us against the effects of such knowledge.

The IPKat has heard that, at a meeting of the COREPER (the European Union’s Committee of Permanent Representatives) this week, it was agreed to change the currently unpopular search system for Community Trade Marks. Searches of the EU’s national registers will become optional for CTM applicants, although the search of the OHIM register will remain compulsory. In a spirit of compromise that will enable national trade mark granting authorities to milk CTM applicants for a little while longer, this change will not be implemented until the passage of a transitional period of four years. This political compromise is expected to receive final formal approval at next week's Council Meeting.

In a letter to members of MARQUES, the association of European trade mark proprietors, chairman Tove Graulund describes this compromise as “not ideal for brand owners, but acceptable”. Tove notes that, in four years’ time, applicants will be able to decide for themselves if they wish to make use of national searches or not.

A federal court has dismissed Wells Fargo's application for interim injunctive relief against WhenU, a software maker that launched rival pop-up advertisements when customers accessed the bank's website. Said Judge Nancy Edmunds (US District Court of Michigan, Southern Division): "the fact that some WhenU advertisements appear on a computer screen at the same time the plaintiffs' web pages are visible in a separate window does not constitute a use in commerce of the plaintiffs' marks". The bank alleged copyright and trade mark infringement.

WhenU makes software that tracks the movement of websurfers and serves up targeted advertisements to those who are likely to make a purchase. For example, an ad for travel site Priceline.com might appear while a surfer is visiting Travelocity.com. The software is bundled with other popular downloads such as peer-to-peer software BearShare or weather applications, that consumers use for free by agreeing to receive occasional ads. About 30 million internet users have WhenU's software on their desktops. Said the judge: “The fact is that the computer user consented to this detour when the user downloaded WhenU's computer software. While pop-up advertising may crowd out the U-Haul advertisement screen through a separate window, this act is not trade mark or copyright infringement, or unfair competition".

Wells Fargo described this decision as "a set-back" for consumers: "This form of advertising can create confusion for impacted customers who visit financial sites and believe the offers they are receiving are from that financial institution", said a Wells Fargo representative. "The source of these pop-up advertisements may not always be clear to the customer. It's important for customers to know who they are dealing with online, and we took action to eliminate this source of confusion for our customers". No court date has yet to be set for the full trial.

The IPKat, despite its instinctive and deep-rooted dislike of all pop-up advertisements, is keeping an open mind on the outcome of the next round of this litigation since neither the copyright nor the trade mark issues are susceptible of easy resolution.

The IPKat has spotted an interesting OHIM Opposition Division decision on the registrability of O’ versus Mc surnames. O’Neill applied to register a figurative depiction of the work O’NEILL in various classes of goods, including Class 25. Peek, the proprietor of an earlier German mark for the work MC NEAL in Class 25, opposed O’Neill’s application in so far as it included sports and leisure clothing, headgear and footwear, especially sports shoes, casual shoes, sandals and socks. Peek argued that the signs and the goods were identical or similar, leading to a likelihood of confusion and particularly that the two signs would be pronounced identically because the prefixes had not aural effect and consumers would notice the main components of both signs (NEILL AND NEAL) rather than the prefixes (MAC and O’).

The opposition was rejected. The goods were either identical or similar. Peek’s articles of clothing encompassed O’Neill’s sports and leisure clothing and socks. Similar concerns meant headgear was identical or very similar to clothing, especially since headgear is meant to be fashionable as well as protecting wearers from adverse weather. O’Neill’s footwear was similar to Peek’s clothing since both were worn by humans and their function is to cover and protect the human body. Additionally, both are often sold in the same outlets and clothing manufacturers often produce footwear under the same mark. Consumers know of this practice and will therefore perceive the two types of goods as belonging to the same category.

However, two marks were not similar. Visually, the signs were different. Three of the six letters each contained were different. Additionally, the beginning of both signs, which is the part to which consumers pay the most attention and will be remembered most clearly, were different. So were the second parts considering the different composition of letters that made up each of them. Aurally, the two suffixes (NEAL and NEILL) would be pronounced in the same way by the relevant public (the German public because that was where the earlier mark was registered). However, the beginnings were completely different sounds and consumers’ attention is generally caught by the beginnings of signs rather than by their ends. Thus, aurally, the difference outweighed the similarities. Conceptually, the two marks had no meaning in the relevant country. Instead, they would be perceived as family names of foreign origin and so consumers would notice the difference between them.

To determine the likelihood of confusion, the attentiveness of the relevant public, the distinctiveness of the earlier mark and the similarity of the goods or services had to be taken into account. Here, the consumers in question were the standard average consumers of the goods in question as defined by the ECJ in Lloyd. To assess the distinctive character of the mark, it was necessary to make a global assessment of the capacity of the mark to distinguish the goods for which the mark was registered as coming from a specific undertaking. Peek did not argue that its mark had acquired distinctiveness so any distinctiveness had to be per se. However, Peek’s mark was averagely distincitve. There was no likelihood of confusion because although a lesser degree of one of the similarity factors can be made up for by the other and the goods were identical or similar, the signs were dissimilar so there could be no likelihood of confusion.

The IPKat is interested by the Opposition Division’s approach to assessing the similarity of the two names. He’s not sure why the fact that they were perceived as surnames did not qualify them for conceptual identity. On a strict reading, they are conceptually very similar because both “O’” and “Mc” mean “son of”, but chances are an average German consumer would not know this. He’s also not sure why the Opposition Division went on to consider the distinctiveness of the mark since the opposition was doomed to failure once the marks were found to be dissimilar. The similarity of goods assessment is also worthy of note, particularly the part about consumer perception being shaped by practice in the trade.

Thursday, 20 November 2003

The first convictions under the Australian criminal internet piracy legislation have taken place according to news.com.au. Peter Tran and Charles Ng were each given 18 month suspended prison sentences and, together with Tommy Le, received community service orders for their parts in running a Napster-style MP3 site. The judge, NSW Deputy Chief Magistrate Graeme Henson, said that the trio's activity didn't only deprive copyright holders and artists, but also "drills down deeply within the economy" and can "work a significant disadvantage to society". Michael Speck, of Music Industry Piracy Investigations, has claimed that the sentences are too short, comparing the group's acts to theft, and has argued that they should be treated as if they had stolen the quantity of CDs shared on their network from an actual shop.

The IPKat is not entirely happy with the analogy drawn between copyright and the theft of tangible property. For one thing, it is uncertain that those who used the downloading network would actually have bought the physical CDs, so a direct diversion of sales has not necessarily taken place. Those who assume that tangible property principles such as theft apply to intangible intellectual property must prove their point and demonstrate that they are suitable, despite the differences between physical and intellectual property.

So you want pirate music? Click here, here and here you naughty person

In Budejovicky Budvar NP v Rudolf Ammersin GmbH, Case C-216/01, the European Court of Justice handed down a long, complex decision on the legal basis upon which a Czech brewer can prevent the sale in Austria of AMERICAN BUD brand beer. Budvar, a Czech brewer, exported BUDWEISER BUDVAR beer to Austria. Austrian company Ammersin sold Anheuser-Busch's AMERICAN BUD beer. In 1999 Budvar sought an order that Ammersin stop using the word "Bud", or similar designations likely to cause confusion, for beer. Budvar claimed that (i) AMERICAN BUD was confusingly similar to its own prior Austrian trade marks; (ii) the use of AMERICAN BUD for a beer from anywhere but the Czech Republic breached a bilateral convention concluded between Austria and the former Czechoslovakia which listed "Bud" as a protected designation reserved exclusively for Czech products. The Austrian court stayed the proceedings and referred a number of questions to the ECJ concerning the interpretation of Arts 28, 30 and 307 of the EC Treaty as well as Council Regulation 2081/92 on geographical indications.

The ECJ ruled as follows:

(a) Regulation 2081/92 did not say that simple indications of geographical source could not be protected under the law of a Member State. Its aim was to ensure uniform pan-EU protection of geographical designations. However, the national protection of geographical designations which did not meet the requirement of registration under the Regulation was governed by national law and was confined to that territory.

(b) Since the Austrian national system of protection of geographical indications provided for absolute protection, it was irrelevant whether there was any risk of consumers being misled. The scope of Regulation 2081/92 however depended on the nature of the designation, since it covered only designations of products where there was a specific link between their characteristics and their geographic origin. "American Bud" was not a designation falling within the scope of the Regulation. Its protection under the bilateral agreement was therefore limited to Austrian territory.

(c) Arts 28 EC (which prohibited barriers to intra-EU trade) and 30 (which justified limited exceptions to that prohibition) applied without distinction to products originating in the EU and to those admitted into free circulation in any of the Member States, whatever the real origin of such products.

(d) The prohibition on marketing "Bud" beer from countries other than the Czech Republic in Austria, under the bilateral convention, could affect imports of "Bud" beer from other Member States and thus of constituting a barrier to intra-EU trade. Such a rule was therefore a measure having an effect equivalent to a quantitative restriction within the meaning of Art.28. The courts thus had to consider whether such a restriction was justified under Art.30. Since the aim of the bilateral agreement was to ensure fair competition, such an objective could fall within the sphere of the protection of industrial and commercial property within Art.30 as long as "Bud" had not, either at the time of the entry into force of the agreement or subsequently, become generic in the country of origin. If the national court found that "Bud" designated a region or a place and its protection was justified under Art.30, its protection could be extended to Austria.

(e) If the national court found that "Bud" did not identify any region or place, the question then arose whether the absolute protection of that name, as provided for by the bilateral convention, constituted an obstacle to the free movement of goods. If so, without prejudice to any protection under specific rights such as trade mark rights, the protection of "Bud" could not be justified on the grounds of protection of industrial and commercial property under Art.30. If it were established that "Bud" contained no reference to the geographical source of the products it designated, Art.28 would preclude its protection by means of a bilateral agreement between a Member State and a non-member country.

(f) Rights and obligations under an agreement concluded between a Member State and a non-member country before the date of accession of that Member State were not affected by the EC Treaty and the purpose of Art.307(1) was to make clear, in accordance with the principles of international law, that application of the EC Treaty did not affect the duty of the Member State concerned to respect the rights of non-member countries under an earlier agreement and to perform its obligations.

(g) It was for the national court to ascertain whether, after the break-up of Czechoslovakia in 1993, both Austria and the Czech Republic intended to apply the principle of continuity of treaties to the bilateral instruments at issue.

(h) EU Member States had to take all appropriate steps to eliminate the incompatibilities between a pre-EU accession agreements and the EC Treaty. The national court had to ascertain whether a possible incompatibility between the EC Treaty and the bilateral convention could be avoided by interpreting that convention in such a way that it was consistent with Community law. If that proved impracticable, that State should take appropriate steps. Until incompatibilities were resolved, Art.307(1) permitted that State to continue to apply such an agreement in so far as it contained obligations which remained binding on that State under international law.

The IPKat marvels at the complex legal knots that must be untied before an Austrian innkeeper can get an answer to the simple question "can I sell this can of AMERICAN BUD in my bar?"

Wednesday, 19 November 2003

The IPKat is pleased to welcome back London barrister Ashley Roughton as a guest blogger. Ashley, of Hogarth Chambers, is an intellectual property specialist who has appeared in many recent cases, including Arsenal v Reed.

Much comment has been made about the apparent widening of the test for infringement as set out in Article 5 of Council Directive 89/104 (the trade marks directive) following the ECJ judgment in Adidas v Fitnessworld. Two points emerge. The first is the issue of the "link" between the registered trade mark in issue and the sign. The test for infringement is said to be less than confusion (or at least different): any "link", whatever that means, will do. The second is to do with the fact that the ECJ appear to have re-written Article 5(2) of the directive so that the reputational protection available to proprietors of registered trade marks also applies to goods or services which are identical or similar to those for which the registered trade mark in issue is registered, provided, that the registered trade mark has a sufficient reputation.

Assuming that the ECJ is right, what does this mean in practice? Here considerable difficulties arise. At first it seems impossible, without the intervention of the legislature, to delete section 10(3) of the Trade Marks Act 1994 so that a claimant relying on section 10(3)(b) of the Act need not show that the defendant's goods or services are dissimilar to those set out in the trade mark registration document. Since the ECJ says it does not matter whether the goods or services in question are similar to those set out in the registration document, section 10(3)(b) should not be there.

How, then, does one formulate a claim under section 10(3) of the Act? To this there are two possible answers. The first is to say that the directive has horizontal direct effect. In other words, private litigants can rely upon the directive -- and only the directive -- as setting out the basis for a cause of action, without recourse to the subsidiary legislation (in this case the Act). Standing well in the way of this argument is the well established notion that there is to be no horizontal direct effect so far, at least, as directives are concerned and so far as concerns private rights. The position so far as governments are concerned is different, but this is a separate notion known as vertical direct effect and does not concern the point being made. The "no horizontal direct effect" rule is one which has, in the past, been repeatedly made by the ECJ (see, for example, Case C-192/94 El Corte Ingles SA v. Rivero [1996] I E.C.R. 1281). The second, more attractive, answer is to say that if a provision of a domestic statute offends European law, that provision must be ignored. There is sparse but strong authority for this proposition: see Case C-269/80 R. v Tymen [1981] E.C.R. 3079. Therefore, the argument goes, ignore section 10(3)(b) of the Act.

While this second point is procedurally attractive to brand owners, at least it leaves one with a sense of discomfort; the sort of discomfort which gives legislators a bad name. Article 5(2) of the directive is reasonably clear and section 10(3)(b) of the Act is a reasonable transposition of the directive in that regard. The ECJ may be able to declare national transpositions of directives as being incompatible with European law but it seems it has developed a new power to declare directives to mean something which they don't. Whether this opinion stands the test of comment on the IPKat web site remains to be seen.

Tuesday, 18 November 2003

Today the IPKat attended Professsor Gerald Dworkin's talk, "Unfair Competition: Is the Common Law in Need of a Loose Cannon?", hosted by the Oxford Intellectual Property Research Centre at St Peter's College. The focus was on the breadth of the unfair competition action at common law and on the place of misappropriation within in it. He began by identifying three possible ingredients of an unfair competition tort: Confusion (or Misrepresentation); Attack (on another trader) and Theft (or Misappropriation) a.k.a. CAT or MAT. The first two of these ingredients were enshrined in Art 10bis of the Paris Convention, while the third - misappropriation - was not. Nor was misappropriation singled out in Art 39 of TRIPs. However, this did not mean that there was no place for misappropriation within unfair competition doctrine.

Professor Dworkin described the manner in which passing off law in the UK had expanded the concepts of goodwill, confusion and damage so as to address new forms of unfair competition and changing trade practices. Nonetheless, passing off has not been stretched so far that it will provide relief against misappropriation alone in the absence of misrepresentation. This was not always the case in the US, where misappropriation without confusion was recognised in the 1918 Supreme Court case of INS v Associated Press. However, this decision was never fully accepted and was later restricted to the protection of "hot news" in NBA v Motorola.

After reviewing the ad hoc protection accorded to acts of misappropriation in perceived "problem cases" such as semi-conductor chips and database rights, he went on to consider why the common law is reluctant to grant protection against misappropriation per se and how certain other jurisdictions were coping with the same issue. He noted that while countries such as France, Germany and Switzerland ostensibly provide protection against misappropriation, they employ an "X factor" to distinguish deserving cases from undeserving cases.

In concluding, Professor Dworkin conceded that before any doctrine of misappropriation was recognised, it would be necessary to consider the economic arguments for and against such an expansion. He also pointed out that new forms of action and new rights e.g. the EU unregistered design right, were already eating into the territory where such relief may be desirable.

The IPKat says that this is an area that needs further investigation. While the prospect of competitors being able to take a "free ride" on the efforts of others is instinctively unappealing, the risk of measures that would stifle competition is equally unattractive.

Ananova reports that Disney studio bosses are concerned about a new movie which shows Father Christmas drinking, stealing and chasing girls. "Bad Santa", starring Billy Bob Thornton, has been made by Disney subsidiary Miramax, the studio that also made Quentin Tarantino's "Kill Bill". In one scene, Santa says to a barmaid: "I'm an eating, drinking, f***ing Santa Claus!" "Prove it," she replies. The next scene shows Santa and the barmaid having sex in his car. In another scene, a child asks: "You are really Santa, right?" Santa responds: "No, I'm an accountant. I wear this as a f***ing fashion statement!" The Drudge Report says the film has caused "complete outrage" among senior Disney executives. "Nothing appears sacred, anymore, this is just not in the spirit of Walt Disney", a source close to Chief Executive Michael Eisner is quoted as saying.

The IPKat is not surprised that Santa Claus should be considered sacred by money-making Disney executives, even though he is pretty well devoid of significance in genuinely religious circles. A search of the Vatican website, for example, scored zero hits for "Santa Claus". Further, Google searches for "Santa Claus" + money yield around 155,000 hits, "Santa Claus" + sex give around 64,100 and "Santa Claus" + religion scores only around 48,700. More seriously, the IPKat notes that we are dealing here with the tarnishment of a fact-based fictional character who has brought untold happiness to millions of children. Perhaps WIPO's plans for the protection of traditional knowledge and folkore should be extended to cover cultural icons such as Santa Claus, whose value may be irretrievably damaged by such acts of cultural vandalism.

The BBC reports that an advertising agency has had an unexpected success with a spoof website (www.whatbrandareyou.com) that it set up. The site pokes fun at the trend for companies to rebrand at great expense with “nonsense” names such as Corus and Arriva by offering to generate a new name for a company once the existing name, core value and main goal of the company is inputted. However, names that the site generates are actually being used by genuine companies which have registered certain of them with Companies House, although the directors of those companies claim not to know of the website.

The IPKat is rather impressed by all these “nonsensical” names. On the one hand, they sound meaningful enough to suggest to consumers that there is a fundamental value lurking behind the brand but on the other hand, they are in fact pretty meaningless, which means that they are not precluded from being registered as trade marks. However, he is not impressed with the website’s suggested name – rest assured, the IPKat will NOT be rebranding as “Subigo” any time soon.

Sunday, 16 November 2003

IPKat’s friend Jordgubbar writes to tell us about Case C-101/01 Bodil Lindqvist, in which the European Court of Justice (ECJ) delivered its judgment on the interpretation of the Data Protection Directive (Directive 95/46) and the Swedish Personuppgiftslag (SFS 1998:2004), which implemented that Directive.

Background to the reference

In 1998, Mrs Lindqvist set up internet pages at home in order to allow parishioners of her church preparing for their confirmation to obtain information they might need. Those pages contained information about Mrs Lindqvist and 18 colleagues which included some family circumstances and telephone numbers. She stated that one colleague had injured her foot and was working part-time on medical grounds. She did not however tell her colleagues of the existence of those pages or obtain their consent. Nor did she notify the data inspectorate of her activities. The public prosecutor proceeded against Mrs Lindqvist, charging her with breach of the Personuppgiftslag in that (i) she had processed personal data without prior written notification; (ii) she had processed sensitive personal data without authorisation and (iii) she had transferred personal data to a third country (by placing it on an internet site accessible outside the EEA) without authorisation.

Article 1 of the Directive sets out the basic protection of the fundamental rights and freedoms of natural persons with respect to the processing of personal data. Article 3 sets out the scope of the Directive: the processing by any means of personal information which forms part of a filing system or is intended to do so. It sets out situations in which the data protection legislation does not apply, including public security and defence purposes. Further, the Directive does not apply to the processing of personal data by a person in the course of purely personal or household activities. By virtue of Article 8, certain types of information are "sensitive personal data", which includes information concerning health.

Summaries of the questions to which the ECJ responded

Question 1: Does the mention of a person (by name or with a name and telephone number) on an internet home page constitute the processing of personal data for the purposes of the Directive?

The term "personal data" covers any information relating to an identified or identifiable natural person. This includes the name of a person in conjunction with his telephone co-ordinates or information about his working conditions or hobbies. To do anything with such data constitutes "processing", so the loading of personal data on an internet page must be considered processing.

Question 2: The Court did not need to answer this question

Question 3: Does loading such information on to a private homepage fall within one of the exceptions in Article 3(2)?

The Court considered the exceptions specifically set out in Article 3(2) and held that the list of activities is exhaustive. Charitable or religious activities cannot be considered equivalent to the activities set out in that list. Further, the Court held that the exception in respect of activities which are exclusively personal and domestic must be interpreted as relating only to activities which are carried out in the course of private or family life. Mrs Lindqvist submitted that private individuals who make use of their freedom of expression to create internet pages in the course of a non-profit or leisure activity are not carrying out an economic activity and are thus not subject to EC law. Citing Österreichischer Rundfunk, the ECJ held that recourse to Article 100(a) of the EC Treaty (the legal basis for the Directive) does not presuppose the existence of an actual link with free movement between Member States in every situation referred to by the Directive. The Court considered that a contrary interpretation would go against the essential objective of approximating the laws of Member States in eliminating obstacles to the functioning of the internal market.

Question 4: Is information that a person has injured his foot and is on half time on medical grounds "sensitive personal data" for the purposes of Article 8(1).

The ECJ held that such data clearly constitutes personal data concerning health within the meaning of Article 8(1) and is therefore sensitive personal data for the purposes of the Directive.

Question 5: Is the placing personal data on a website a transfer of the data within the meaning of the Directive and does it makes a difference if no individual from a third country has accessed the site?

To obtain the information appearing on the internet, an internet user would have to connect to the internet and to carry out the necessary actions to access those pages. In other words, Mrs Lindqvist's internet pages did not contain the technical means to send the information automatically to people who did not intentionally seek access to them. Where personal data is loaded on to a website in one country and then appears on the computer of a person in another country, such data is not directly transferred between those two people but goes through the computer infrastructure of the hosting provider where the page is stored.

Since the Directive contained no criteria applicable to the use of the internet, the ECJ did not presume that the legislature intended the expression "transfer of data to a third country" to cover the loading of data on to an internet page, even if such information is thereby made accessible to persons in third countries with the technical means to access them.

Question 6: Does the Directive restrict freedom of expression or other freedoms and rights applicable within the Community (in particular, those enshrined in Article 10 of the European Convention of Human Rights)?

The ECJ considered that the provisions of the Directive do not, in themselves, bring about a restriction which conflicts with the general principles of freedom of expression or other freedoms or rights. It is for national authorities and courts responsible for applying the national legislation implementing the Directive to ensure a fair balance between those rights and interests.

Question 7: Can a Member State provide more extensive protection for personal data or give it a wider scope that the Directive?

Measures taken by Member States to ensure the protection of personal data must be consistent with the provisions of the Directive. They must also be consistent with the objective of the Directive of maintaining a balance between freedom and movement of personal data and protection of private life. However, the Court held that a Member State is not prevented from extending the scope of national legislation implementing the provisions of the Directive to areas not included by its scope, provided that no other provision of Community law precludes it.

The IPKat wonders whether data protection laws are going to be used as a back-door to protecting personal privacy rights. In Douglas and Zeta-Jones v Hello! the UK High Court awarded damages for breach of data protection rules, in addition to regular damages for breach of confidence, in an action for damage to the claimants’ “commercial privacy” interests (see IPKat blog, 12 November).

Under s.41(2) of the UK Trade Marks Act 1994, an applicant can file a single application for the registration of a series of marks where all of the marks “resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark”. Where a mark is considered unregistrable by the Registrar, under s.37(3) he must inform the applicant and give him an opportunity to make representations or amend the application, otherwise the application will be refused. The Lord Chancellor’s Appointed Person (LCAP) considered the requirements for series applications in the recent Gateway case.

Gateway applied to register a series of fifteen marks comprised of three or four “cow spots” (the characteristic black on white blotches found on many cows) for Classes 9 and 35 in a single application as a series. The Registrar refused the application, stating that the marks did not constitute a series since they differed as to their material particulars and that, furthermore, none of the applied-for marks could be divided into separate series (e.g. one of three spot marks and one of four spot marks) since the marks possessed a low level of distinctive character. What he meant by this was that any variation, including the number, size and configuration of the sports in each mark, affected the identity of each mark. Gateway appealed to the LCAP, arguing primarily that the concept behind all the marks was the same, so they would all “ring the same bell at the same pitch” in terms of their perceptions and recollections of the relevant consumer and that, even if this was not the case, Gateway should have been given the opportunity under s.37(3) to take corrective action to neutralise the objections. Gateway also objected to the test the Registrar used for determining the identity of the mark and doubted that he had made the assessment from the point of view of the relevant consumers.

The Hearing Officer’s decision was set aside and the case was remitted to the Registrar: According to the LCAP, the identity of a mark must be judged by reference to the specific individuality of that mark, assessed according to the way it would be perceived and remembered by the average consumer of the goods or services concerned, rather than by reference to the general nature or common characteristics of all the marks in issue. The average consumer here is reasonably well-informed and reasonably observant and circumspect. The assessment under s.41(2) requires an examination of whether all visual, aural and conceptual differences are insubstantial in terms of their effect on the identity of reiterated trade mark.

In this case, it was wrong to take an “all or nothing approach” i.e. that either all of the marks constituted a single series or none of the marks constituted a series. Instead, the marks could be divided into “sub-combinations” of marks that would satisfy the requirements of s.41(2). Comparing each of the fifteen marks with each other would require a hundred and five different comparisons, but it was not necessary for the LCAP to perform such a comprehensive analysis. Clearly there were differences in at least five of the comparisons that would modify the distinctive character of the marks in issue, according to their impact on the perceptions and recollections of the average consumer, and so the complete set of fifteen was not registrable as a series. However, since there was scope for some corrective action which would salvage some of the marks as a series, the Hearing Officer should not have denied Gateway the opportunity to take appropriate corrective action under s.37(3). It was for the Registrar to determine which marks could be saved, though the LCAP did not think that it would be sufficient to simply divide the application into one for three-spot marks and another for four-spot marks.

The IPKat notes that the LCAP has taken a narrow approach in requiring a mark-for-mark comparison and by not paying attention to the concept behind the series. Such a strict approach is called for by the wording of the Act. However, the IPKat also welcomes the LCAP’s realistic approach to the division of invalid series. Nevertheless, the IPKat wonders what benefit is conferred by being the owner of a series of marks. If the marks in the series are really so similar, then any use by a third party that infringes one of the series would in any event infringe all of the series, in which case it would be sufficient just to have a single registered mark.

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